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benefits of the invention reasonably acexecutive department, independent com cessible to the public. mission, board, office, agency, adminis (5) The license may extend to subsidtration, authority, wholly owned corpo iaries and affiliates of the licensee but ration, or other independent establish shall be nonassignable without approval ment of the executive branch of the of the Government agency, except to the Government of the United States of successor of that part of the licensee's America.

business to which the invention pertains. (d) "The head of the Government

8 101-4.103_3 Limited exclusive license. agency” means the head of the agency or his designee.

(a) Availability of licenses. Each Gov

ernment invention may be made avail$ 101-4.103 Types of licenses and con

able for the granting of a limited exditions for licensing.

clusive license provided that: $ 101-4.103–1 Government inventions (1) The invention has been published available for licensing.

as available for licensing pursuant to Government inventions normally will

$ 101-4.104–1 for a period of at least be made available for the granting of 6 months; express nonexclusive or limited exclu

(2) The head of the Government sive licenses to responsible applicants

agency has determined that (i) the inaccording to the factors and conditions vention may be brought to the point of set forth in $8 101-4.103–2 and 101-4.

practical application in certain fields of 103–3, subject to the applicable proce

use and/or in certain geographical lodures of $ 101–4.104.

cations by exclusive licensing, (ii) the

desired practical application has not $ 101-4.103–2 Nonexclusive license. been achieved under any nonexclusive

(a) Availability of licenses. Each Gov license granted on the invention, and (ii) ernment invention normally shall be

the desired practical application is not made available for the granting of non

likely to be achieved expeditiously in the exclusive revocable licenses, subject to public interest under a nonexclusive 11the provisions of any other licenses, in cense or as a result of further Governcluding those under $ 101-4.103-4.

ment-funded research or development; (b) Terms of grant. (1) The duration

(3) The notice of the prospective of the license shall be for a period as

licensee has been published, pursuant to specified in the license agreement, pro

$ 101-4.104-4(a) for at least 60 days; vided that the licensee complies with all

and the terms of the license.

(4) After termination of the period (2) The license shall require the li set forth in $ 101-4.103–3(a)(3), the censee to bring the invention to the point Government agency has determined that of practical application within a period no applicant for a nonexclusive license specified in the license, or such extended has brought or will bring, within a reaperiod as may be agreed upon, and to sonable period, the invention to the point continue to make the benefits of the in of practical application as specified in vention reasonably accessible to the pub the exclusive license, and that to grant lic.

the exclusive license would be in the (3) The license may be granted for all

public interest. or less than all fields of use of the inven (b) Selection of exclusive licensee. An tion, and throughout the United States of exclusive licensee shall be selected on America, its territories and possessions, bases consistent with the policy set forth the Commonwealth of Puerto Rico, and in $ 101-4.101 and in accordance with the District of Columbia, or in any les the procedures set forth in $ 101-4.104. ser geographic portion thereof.

(c) Terms of grant. (1) The license (4) After termination of a period spec may be granted for all or less than all ified in the license agreement, the Gov fields of use of the Government invention ernment agency may restrict the license and throughout the United States of to the fields of use and/or geographic America, its territories and possessions, areas in which the licensee has brought the Commonwealth of Puerto Rico, and the invention to the point of practical the District of Columbia, or in any lesser J application and continues to make the geographic portion thereof.

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FEDERAL PROPERTY MANAGEMENT REGULATIONS

(AMENDMENT A-16, JANUARY 1973)

402

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SUBPART 101–4. 1 LICENSING OF GOVERNMENT-OWNED INVENTIONS

101-A, 103-5 (b) (2) Subject to the rights reserved to (8) The license may extend to subsidi

arles and alates of the licensee but and 101-4.103-3(c)(7), the licensee shail shall be nonassignable without approval be granted the exclusive right to practice of the Government agency, except to sucthe invention in accordance with the cessors of that part of the licensee's busiterms and conditions specified in the ness to which the invention pertains. license.

(9) An exclusive licensee may grant (3) The duration of the license shall sublicenses under his license, subject to be negotiated but shall be for a period the approval of the Government agency. less than the terminal portion of the Each sublicense granted by an exclusive patent, the period remaining being suf- licensee shall make reference to the ficient to make the invention reasonably exclusive license, including the rights available for the grant of a nonexclusive retained by the Government under the license; and such period of exclusivity exclusive license, and a copy of such subshall not exceed 5 years unless the head license shall be furnished to the Govof the Government agency determines ernment agency. on the basis of a written submission sup (10) The license may be subject to ported by a factual showing that a longer such other terms as may be in the public period is reasonably necessary to permit interest. the licensee to enter the market and recoup his reasonable costs in so doing. (4) The license shall require the 11

8 101-4.1034 Additional licenses. censee to bring the invention to the point of practical application within a period Subject to any outstanding licenses, specified in the license, or within a longer

nothing in this subpart shall preclude a period as approved by the Government

Government agency from granting addiagency, and to continue to make the

tional nonexclusive or limited exclusive benefits of the invention reasonably ac

licenses for Government-owned invencessible to the public.

tions when the Government agency de(5) The license shall require the

termines that to do so would provide for licensee to expend a specified minimum

an equitable exchange of patent rights. amount of money and/or to take other

The following exemplify circumstances specified actions, within a specified

wherein such licenses may be granted: period of time after the effective date

(a) In consideration of the settlement of the license, in an effort to bring the of an Interference; invention to the point of practical ap

(b) In consideration of a release of a plication.

claim of infringement; or (6) The license shall be subject to the (c) In exchange for or as part of the irrevocable royalty-free right of the consideration for a license under adGovernment of the United States to versely held patents. practice and have practiced the invention by or on behalf of any foreign government or intergovernmental organization pursuant to any existing or future

$ 1014.103–5 Royalties. treaty or agreement with the United (a) Normally, royalties shall not be States.

charged under nonexclusive licenses (7) The license shall reserve to the granted to U.S. citizens and U.S. corporaGovernment agency the right to require tions on Government inventions; howthe licensee to grant sublicenses to re- ever, the Government agency may responsible applicants on terms that are quire other considerations. reasonable in the circumstances (1) to (b) An exclusive license on a Governthe extent that the invention is required ment invention may require the payfor public use by Government regula ment of royalties, and/or other considertions, or (ll) as may be necessary to ful- ations, when the licensing situation and All health or safety needs, or (111) for the policy in $ 101-4.101 considered to

other public purposes stipulated in the gether, indicate that it is in the public L license

interest to do so.

FEDERAL PROPERTY MANAGEMENT REGULATIONS

(AMENDMENT A-16, JANUARY 1973)

403

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r 8 1014.103–6 Reports.

(1) Purpose for which license is de A license shall require the licensee to sired and a brief description of appliachieve practical application of the in- for which applicant intends to practice submit periodic reports on his efforts to cant's plan to achieve that purpose;

(g) A statement of the fields of use vention. The reports shall contain inform the invention; and mation within his knowledge, or which he may acquire under normal business

(h) A statement as to the geographic practices, pertaining to the commercial areas in which the applicant would pracuse being made of the invention and tice the invention. other information which the Government agency may determine is pertinent to its licensing activities and is specified in the $ 101.4.104–3 Contents of an exclusive

license application. license.

In addition to the information indi8 101 4.104 Procedures.

cated in $ 101-4.104–2, an application § 101-4.104–1 Government agency pub- for an exclusive license shall include: lication requirements.

(a) Applicant's status, if any, in any Each Government agency shall cause

one or more of the following categories: to be published in the FEDERAL REGISTER. (1) Small business firm, (2) minority the Omcial Gazette of the U.S. Patent business enterprise, (3) location in a surOmce, and at least one other publication plus labor area, (4) location in a lowthat the Government agency deems income area, and (5) location in an ecowould best serve the public interest, a

nomically depressed area; list of the Government inventions in its

(b) A statement of applicant's capacustody available for licensing under the bility to undertake the development and conditions specified in $ 101-4.103. The marketing required to achieve the praclist shall be revised periodically to in- tical application of the invention; clude directly, or by reference to a pre- expenditure, and other acts which the

(c) A statement describing the time, viously published list, all inventions cur- applicant considers necessary to achieve rently available for licensing. Other publications on inventions available for practical application of the invention licensing are encouraged and may in- and the applicant's offer to invest that clude abstracts, when appropriate, as well sum to perform such acts if the license as Information on the design, construc

is granted; tion, use, and potential market for the plicant's best knowledge of the extent to

(d) A statement that contains the apinventions.

which the Government invention is being g 101-4.104–2 Contents of a nonexclu. practiced by private industry and the sive license application.

Government; and
An application for a nonexclusive 11-

(e) Any other facts which the apcense under & Government invention plicant believes are evidence that it is in should be addressed to the head of the the public interest for the Government Government agency having custody of agency to grant an exclusive license the invention, and shall include:

rather than a nonexclusive license and (a) Identification of invention for that such exclusive license should be which license is desired, including the pa- granted to the applicant. tent application serial number or patent number, title and date, 11 known, and any other identification of

8 101-4.104-4 Published notices. invention;

(a) A notice that a prospective exclu(b) Name and address of the person, sive licensee has been selected shall be company, or organization applying for published in the FEDERAL REGISTER, and license and whether the applicant is a a copy of the notice shall be sent to the U.S. citizen or a U.S. corporation; Attorney General. The notice shall in

(c) Name and address of representa- clude: tive of applicant to whom correspond (1) Identification of the invention; ence should be sent;

(2) Identification of the selected (d) Nature and type of applicant's licensee; business;

(3) Duration and scope of the contem(e) Source of information concerning plated license; and the availability of a license on this in (4) A statement to the effect that the vention;

license will be granted unless:

404

FEDERAL PROPERTY MANAGEMENT REGULATIONS

(AMENDMENT A-16, JANUARY 1973)

SUBPART 101–4, 1

LICENSING OF GOVERNMENT-OWNED
INVENTIONS

101-4,106 (1) An application for a nonexclusive shall furnish the licensee and any subplicant pursuant to $101-4.104-2, is re- intention to modify or revoke the license, ceived by the Government agency having and the licensee and any sublicensee custody of the invention within 60 days shall be allowed 30 days after such notice from the publication of the notice in the to remedy any breach of any covenant FEDERAL REGISTER, and the Government or agreement as referred to in (a) of agency determines in accordance with its this section or to show cause why the prescribed procedures under which pro- license should not be modified or recedures the Government agency shall voked. record and make available for public inspection all decisions made pursuant

$1

101-4.104–6 Appeals. thereto and the basis therefor, that the An applicant for a license, a licensee, applicant has established that he has or such other third party who has paralready achieved or is likely to bring the ticipated under $101-4.104-4(a) (4) (11) invention to the point of practical ap- shall have the right to appeal, in accordplication within a reasonable period un ance with procedures prescribed by the der a nonexclusive license; or

Government agency, any decision con(11) The Government agency deter

cerning the granting, denial, interpretamines that a third party has presented

tion, modification, or revocation of a evidence and argument which has es. license. tablished that it would not be in the $ 101-4.105 Litigation. public interest to grant the exclusive license.

An exclusive licensee shall be granted (b) If an exclusive license has been

the right to sue at his own expense any granted pursuant to this Subpart 101–

party who infringes the rights set forth

in his license and covered by the licensed 4.1, notice thereof shall be published in the FEDERAL REGISTER. Such notice shall

patent. The licensee may join the Govinclude:

ernment upon consent of the Attorney (1) Identification of the invention;

General as a party complainant in such (2) Identification of the licensee; and

suit but without expense to the Govern(3) Duration and scope of the license.

ment, and the licensee shall pay costs (c) If an exclusive license has

and any final judgment or decree that been modified or revoked pursuant to

may be rendered against the Govern$ 101-4.104–5, notice thereof shall be ment in such suit. The Government shall published in the FEDERAL REGISTER. Such have an absolute right to intervene in notice shall include:

any such suit at its own expense. The (1) Identification of the invention;

licensee shall be obligated to furnish (2) Identification of the licensee; and

promptly to the Government, upon re(3) Effective date of the modifica

quest, copies of all pleadings and other

papers filled in any such suit and of evition or revocation.

dence adduced in proceedings relating to $ 101-4.104–5 Modification or revoca the licensed patent including, but not tion.

limited to, negotiations or settlement and (a) Any license granted pursuant to

agreements settling claims by a licensee

based on the licensed patent, and all this Subpart 101-4. 1 may be modified or revoked by the Government agency

other books, documents, papers, and recgranting the license if the licensee at any

ords pertaining to such suit. If as a retime defaults in making any report re

sult of any such litigation the patent quired by the license or commits any

shall be declared invalid, the licensee breach of any covenant or agreement license and be relieved from any further

shall have the right to surrender his therein contained.

obligation thereunder, (b) A license may also be revoked by the Government agency granting the 101-4.106 Transfer of custody of Gov. license if the licensee willfully makes a ernment inventions. false statement of a material factor A Government agency having custody willfully omits a material fact in the of a Government-owned invention may license application or any report re enter into an agreement to transfer its quired in the license agreement. custody to another Government agency

(c) Before modifying or revoking any for purposes of administration, including for any causethe Government agency

(END OF PART) (NEXT PAGE IS 501)

L license, eranceBursuant tomtens subpart the parenting of licenses pursuant to this

FEDERAL PROPERTY MAN AGEMENT REGULATIONS
(AMENDMENT A-16, JANUARY 1973)

405

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